Cancellation No. 92/047,008) AMERICAN RICE, INC. v. Dunmore Properties S.a.

NOTE: This disposition is nonprecedential
United States Court of Appeals for the Federal Circuit
2009-1313
(Cancellation No. 92/047,008)
AMERICAN RICE, INC.,
Appellant,
v.
DUNMORE PROPERTIES S.A.,
Appellee.
Michael S. McCoy, Fulbright & Jaworski L.L.P., for appellant.
Simon L. Moskowitz, Jacobson Holman PLLC, of Washington, DC, for appellee.
With him on the brief was Matthew J. Cuccias.
Appealed from: United States Patent and Trademark Office
Trademark Trial and Appeal Board.

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1313
(Cancellation No. 92/047,008)
AMERICAN RICE, INC.,
Appellant,
v.
DUNMORE PROPERTIES, S.A.,
Appellee.
On appeal from the United States Patent and Trademark Office, Trademark Trial and
Appeal Board.
__________________________
DECIDED: November 16, 2009
__________________________
Before MICHEL, Chief Judge, PLAGER, and LINN, Circuit Judges.
PER CURIAM.
The Trademark Trial and Appeal Board (the ”Board”) of the United States Patent
and Trademark Office (the “USPTO”) denied Petitioner American Rice, Inc.’s (“ARI”)
motion for time to conduct discovery and also granted Respondent Dunmore Properties,
Inc.’s (“Dunmore”) motion for summary judgment against ARI’s petition to cancel
Dunmore’s registration of its BINT ALARAB mark. Because the Board correctly barred
ARI’s claims on grounds of res judicata, we affirm.

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I. BACKGROUND
Both parties to this appeal are purveyors of rice. ARI registered the mark ABU
BINT with the USPTO for use on its rice (International Class 30 (U.S. Class 46)) on May
11, 1982. Dunmore subsequently registered the Mark BINT ALARAB on January, 22,
2002 for use on its corresponding rice product.1 On February 3, 2003, ARI filed a
petition with the USPTO for cancellation of Dunmore’s BINT ALARAB mark (the “2003
Petition”), alleging confusion in trade and dilution of its ABU BINT brand owing to the
claimed similarity of the marks. Dunmore answered ARI’s petition; however, before the
period for discovery scheduled by the Board closed, ARI withdrew its petition without
Dunmore’s consent. Consequently, the Board dismissed the petition with prejudice
pursuant to Trademark Rule 20114(c) on May 28, 2004.
On January 22, 2007, ARI again filed a petition for cancellation of Dunmore’s
BINT ALARAB mark (the “2007 Petition”), again alleging confusion in trade and dilution
of its mark. On March 12, 2007, Dunmore filed a motion to dismiss ARI’s petition
pursuant to Fed. R. Civ. P. 12(b)(6), arguing that ARI’s claims were barred by res
judicata. The Board determined, however, that because Dunmore’s motion necessarily
relied upon matters outside the pleadings (i.e., the order dismissing with prejudice ARI’s
2003 petition for cancellation and the pleadings therein) the motion would be treated as
one for summary judgment under Fed. R. Civ. P. 56, Trademark Rule 2.127(e), and 37
C.F.R. § 2.127(e). On June 19, 2007, ARI amended its petition to include allegations
1 ABU BINT is the English transliteration of the Arabic words meaning “Girl
Brand”, “Father, Daughter”, “Father of a Girl”, or “Father of a Daughter” in various
dialects. BINT ALARAB is an English transliteration of the Arabic words meaning
“Arab’s Girl.”
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that Dunmore fraudulently obtained its registration of the BINT ALARAB mark. ARI
also moved for time to conduct discovery.
On August 15, 2008, the Board denied ARI’s motion for time to conduct
discovery and, on January 9, 2009, granted Dunmore’s motion for summary judgment
against ARI’s claims, holding that the claims were precluded under the doctrine of res
judicata. ARI consequently filed the instant appeal, seeking reversal of the Board’s
denial of its motion for time for discovery and of its grant of summary judgment.
II. DISCUSSION
The Board's determination that ARI's claims are barred by res judicata and its
grant of summary judgment are questions of law that we reviewed de novo. See
Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1323 (Fed. Cir. 2008); Sharp
Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1370 (Fed. Cir. 2006). We review
the Board’s denial of ARI’s motion for time to conduct discovery for abuse of discretion.
Metropolitan Life Ins. Co. v. Bancorp Services, L.L.C., 527 F.3d 1330, 1336 (Fed. Cir.
2008); see also Fed R. Civ. P. 56(f).
The doctrine of res judicata embraces the two related concepts of claim
preclusion and issue preclusion. See 3 Restatement (Second) of Judgments,
Introductory Note (1982); see also Nasalok, 522 F.3d at 1323. Claim preclusion refers
to “the effect of foreclosing any litigation of matters that never have been litigated,
because of a determination that they should have been advanced in an earlier suit.”
Nevada v. United States, 463 U.S. 110, 129-30 (1983) (A final judgment is “a finality as
to the claim or demand in controversy . . . not only as to every matter which was offered
and received to sustain or defeat the claim or demand, but as to any other admissible
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matter which might have been offered for that purpose”) (quoting Cromwell v. County of
Sac, 94 U.S. 351, 352 (1877))); see also 18 Charles Alan Wright, Arthur R. Miller &
Edward H. Cooper, Federal Practice and Procedure § 4402 (2d ed. 2002). Issue
preclusion, also called collateral estoppel, refers to “the effect of foreclosing relitigation
of matters that have once been litigated and decided.” Wright, Miller & Cooper, Federal
Practice and Procedure § 4402. Because ARI’s 2003 Petition for Cancellation was
never litigated and decided, but rather was dismissed with prejudice upon ARI’s
withdrawal of its petition without Dunmore’s consent, only the doctrine of claim
preclusion is relevant to this case.
Typically, claim preclusion is applied against a plaintiff who initiates an action that
is related to a prior action. The test for claim preclusion was set forth by this court in
Jet, Inc. v. Sewage Aeration Syst,, 223 F.3d 1360 (Fed. Cir. 2000). Under that test, a
claim is precluded when: (1) there is identity of parties (or their privies); (2) there was an
earlier final judgment on the merits of a claim; and (3) the second claim is based on the
same set of transactional facts as the first. Jet, 223 F.3d at 1362.
In the case at bar, neither party disputes that the first two conditions of the test
have been met, i.e., both parties agree that the parties in the case at bar are identical to
the parties in ARI’s 2003 Petition for Cancellation, and that the Board’s dismissal of
ARI’s petition with prejudice constituted a final judgment on the merits of the claim. The
sole issue, therefore, with respect to the preclusion of ARI’s claim under res judicata is
whether ARI’s petition for cancellation on grounds of confusion and dilution of its mark
and fraud are based on the same set of transactional facts as its first petition.
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ARI argues that its new petition for cancellation is inevitably based upon material
facts that occurred after 2003 Petition and therefore cannot be based upon the same
set of transactional facts. ARI does not adduce those material facts; rather, it argues
that the burden is on Dunmore to prove that no new material facts have arisen since
ARI’s prior petition was withdrawn without consent. Moreover, ARI argues that it also
needs time to conduct discovery to uncover any material facts that occurred since the
withdrawal of the 2003 petition.
However, ARI’s 2007 Petition is, with the exception of a single minor, nonmaterial
word change, identical to its 2003 Petition.2 Furthermore, paragraphs 1-10 and 18-23
of ARI’s amended 2007 Amended Petition are identical to the paragraphs of the 2007
Petition and, with again a single nonmaterial exception, likewise identical to those of the
2003 Petition. Therefore, in its 2007 Petition and Amended Petition, ARI’s claims point
to nothing that suggests that its 2007 Petition is in any way unconnected to those same
transactional facts alleged in the original 2003 Petition. The court finds, therefore, that
the claims of ARI’s 2007 Petition and Amended Petition for Cancellation are based in
the same set of transactional facts as the original 2003 petition and are consequently
barred by res judicata.
Moreover, ARI’s claim of fraud against Dunmore points to alleged facts that
occurred in 2000 and 2001 connected with Dunmore’s application for its mark, and prior
to ARI’s original Petition for Cancellation. ARI claims that Dunmore falsely executed the
declaration in the application for the BINT ALARAB mark, claiming it had the exclusive
2 Paragraph 9 of the 2003 Petition reads, in part: “adjudged to have
infringed the ‘316 Registration”; whereas the same paragraph of the 2007 Petition
reads: “adjudged to have infringed Registration No. 1,195,316.”
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right to use the mark despite knowledge of ARI’s mark. In short, ARI now alleges
nothing concerning Dunmore’s alleged fraud that was not already known to it at the time
it filed its first Petition for Cancellation. Moreover, these allegations arise from the same
series of transactional facts as its other claims in the 2003 Petition alleging confusion
and dilution and could have been raised by ARI in its Petition at that time. Claim
preclusion also extends to those claims or defenses that could have been raised in the
prior action, as long as they arise from the same series of transactional facts as those in
the original claims. See Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1326 (Fed. Cir.
2008) (citing Hells Canyon Pres. Council v. U.S. Forest Serv., 403 F.3d 683, 686 n.2
(9th Cir. 2005)). Because ARI could have litigated these claims in its 2003 Petition for
Cancellation, they are likewise barred under the doctrine of res judicata.
With respect to ARI’s motion for time for discovery, § 528.06 of the Trademark
Trial and Appeal Board’s Manual of Procedure (“TBMP”) states, in relevant part:
A party that believes that it cannot effectively oppose a motion for
summary judgment without first taking discovery may file a request with
the Board for time to take the needed discovery. The request must be
supported by an affidavit showing that the nonmoving party cannot, for
reasons stated therein, present by affidavit facts essential to justify its
opposition to the motion.
It is not sufficient that a nonmoving party simply state in an affidavit
supporting its motion under Fed. R. Civ. P. 56(f) that it needs discovery in
order to respond to the motion for summary judgment; rather, the party
must state therein the reasons why it is unable, without discovery, to
present by affidavit facts sufficient to show the existence of a genuine
issue of material fact for trial. If a party has demonstrated a need for
discovery that is reasonably directed to obtaining facts essential to its
opposition to the motion, discovery will be permitted, especially if the
information sought is largely within the control of the party moving for
summary judgment.
The motion should set forth with specificity the areas of inquiry needed to
obtain the information necessary to enable party to respond to the motion for
summary judgment.
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2009-1313 7
TBMP § 528.06 (2d ed., rev. 2004).
The Board reviewed ARI’s motion and found that it inadequately and insufficiently
addressed ARI’s need for discovery on the issue of whether the application of res
judicata barred ARI’s likelihood of confusion, dilution, and fraud claims. The Board
found that ARI failed to demonstrate any need for discovery that was reasonably
directed to obtaining facts essential to opposing Dunmore’s motion for summary
judgment. Moreover, the Board found that ARI’s ability to respond with respect to the
preclusive effect of res judicata was not dependent upon information that was within
Dunmore’s control.
ARI argues, tautologically, that because it has not had an opportunity to conduct
any discovery, the Board abused its discretion in denying ARI’s motion for time to
conduct discovery on facts it believes are essential to its claims. It contends that
discovery is needed with respect to facts that have occurred since ARI’s withdrawal of
its 2003 Petition. What ARI does not provide, however, is how the nature of any of
those facts (whatever they might be) will assist it in overcoming the res judicata bar of
its 2007 Petition: the claims in that Petition are identical to those of the 2003 Petition
(with respect to the confusion and dilution claims) or arise from the same series of
transactional facts (with respect to the claims alleging fraud). Given ARI’s failure to
meet the requirements of TBMP § 528.06, we cannot say that the Board abused its
discretion in denying ARI’s motion for time to conduct discovery. Consequently, we
affirm the Board’ denial of ARI’s motion for time for discovery.
III. CONCLUSION
For the foregoing reasons, we affirm the decision of the Board.

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